“Creative Destruction” in Legal Jobs VII – IP Law: Trademark Practice

This “Creative Destruction” series Law Careers blog describes Trademark Law from a legal career perspective, newly energized by a variety of developments this century that have transformed the practice... and the opportunities.  The destruction of the developed world’s economies since 2008 has actually rendered trademark practice more alluring, due to the heightened awareness on the part of companies that they need to maximize their revenues from existing intellectual property assets.

Why are Trademarks “Hot?”

In 2001-2002, as the United States was emerging from the last recession, due in large part to the dot.com meltdown, trademark filings with the U.S. Patent and Trademark Office (USPTO) declined significantly, so much so that the office laid off almost one-third of its Trademark Examining Attorneys.

That was then and this is now.

Despite the worst economy in 80 years, trademark filings are doing just fine.  In fact, there are now more Trademark Examining Attorneys working at USPTO than there were before the 2002 lay-off.

An estimated 3.66 million trademark applications were filed worldwide in 2010, representing a growth of 11.8% over 2009.  U.S. residents filed more than 1 million trademarks in 2010.  Two other countries, China and Germany, also each accounted for more than 1 million filings.

U.S. companies are increasingly making use of the Office for Harmonization in the Internal Market (OHIM) to seek protection for their marks in the European Union (EU).  Each OHIM application covers all EU member states.  OHIM has added a whole new dimension to U.S. trademark practices.

Evolving Practice

In addition to the utility of OHIM and the advent of international trademark filing under the Madrid Protocol, two additional major (domestic) developments have transformed U.S. trademark practice.  For most of its history, trademark practice was viewed as an ancillary sideline of patent practice.  If a client had a mark that needed to be filed, its patent firm would do it, but did not consider it as anything more than a client courtesy.

Not anymore.  Today, trademark–only firms are proliferating and expanding throughout the U.S. 

The second major development is the liberation of trademark practice from proximity to USPTO.  The surge in electronic filing capabilities at USPTO has a lot to do with this, and has made trademark law a much more geographically diverse practice than ever before.  Last year almost 75 percent of all USPTO trademark applications were filed electronically.

Principal Employers

Corporations

Trademarks comprise a substantial portion of the almost 80 percent of corporate assets that can be designated either intellectual property or intangibles (up from 32 percent 25 years ago).  Consequently, corporations have steadily increased their hiring for this practice area, a trend that is not likely to subside anytime soon.  Companies employ trademark lawyers for a variety of responsibilities: filing new applications with USPTO and internationally, due to globalization of their businesses; protecting existing marks; assessing the value of marks for licensing and other revenue-generating purposes; and administering licenses, among other activities.

The American companies that filed the most trademark applications in 2010 (the most recent year for which statistics are available) were:

• Mattel
• Johnson & Johnson
• Time Warner
• Walt Disney Company
• GlaxoSmithKline
• News Corporation
• L’Oreal
• LG Electronics
• PepsiCo
• Procter & Gamble

Corporate trademark lawyers can be found in both in-house counsel offices or discrete intellectual property offices, or both, depending on the company.  Most new hires have some trademark law experience.

Law Firms

Like patent specialty and boutique law firms, major law firms considered trademark law something of an afterthought for most of their history.  However, with the economics of trademark practice changing so dramatically on the fly in the 21^st century, big firms have begun to sit up and take notice.  Consequently, they are both gearing up existing trademark practices and launching them if they did not have them before.

Electronic filing has had a profound effect on this, permitting firms far away from the Washington, DC area to get into the game.

Intellectual Property Today magazine lists the following as the top ten trademark law firms of 2011:

• Fross Zelnick Lehrman & Zissu, PC
• K&L Gates LLP
• Kilpatrick Townsend & Stockton
• Knobbe Martens Olson & Bear LLP
• Merchant & Gould P.C.
• Arent Fox LLP
• Holland & Hart
• Husch Blackwell LLP
• Ladas & Parry LLP
• Venable LLP

Trademark Services Firms

Last year, one of these relatively recent entries into the trademark filings business―Raj Abhyanker PC―supplanted megafirm Greenberg Traurig as the number one U.S. trademark filer.  Another trademark services firm―The Trademark Company―jumped to number three on the list.  Both upstart firms benefit from taking advantage of technology, being web-based filing practices.  What makes this even more remarkable is that these two trademark services firms ranked 87^th and 91^st respectively on the prior year’s list.

Trademark services firms, although not law firms, hire attorneys.  Look for them to grow rapidly.  A selected list in addition to the two mentioned in the previous paragraph follows:

• Corporation Services Company https://www.cscglobal.com
• TradeMark Express http://www.tmexpress.com
• Patent & Trademark Services, Inc. http://www.patentservices.com

Colleges and Universities

Walk into any university bookstore these days and, if you are lucky, you might find some books somewhere in the back of the store or on another floor.  What you are most likely to see when you first enter are apparel and products bearing the school’s logo, prominently and proudly displayed.

America’s higher education institutions are among the largest employers of trademark lawyers.  What began 25 years or so ago with one of the campus in-house counsel offices walking up and down the college town’s streets on football Saturdays looking for trademark violations in the form of counterfeit and knock-off products for sale from hastily constructed kiosks has evolved into sophisticated trademark practices encompassing filing, protection, licensing and enforcement.

The larger the institution, the more likely it is to have one or more trademark law specialists on its legal staff.  Moreover, many schools have trademark attorneys working out of more than just one office.  Today, you might find them in the General Counsel’s Office, Intellectual Property Office, Technology Transfer/Commercialization Office, and/or Regulatory Compliance Office.

U.S. Government

USPTO is, by a long shot, the largest employer of trademark attorneys in the federal government.  But it is by no means the only government agency where trademark attorneys work.  A variety of other agencies have trademark lawyers, some rather surprising ones among them.

USPTO

Focusing first on USPTO, it currently employs approximately 400 Trademark Examining Attorneys whose principal duties include the following:

• Examining domestic and foreign trademark applications for statutory, regulatory, and treaty compliance;
• Conducting detailed searches to ensure applications, if approved, would not impinge on existing intellectual property rights of others or harm the public;
• Creating original statements of goods and services, based on application information, capable of registration;
• Advising and counseling applicants to resolve bars to registration and clarify prosecution issues;
• Gathering and evaluating evidence supporting substantive refusals of applications; and
• Conducting legal research and drafting the Office's position refusing registration, and evaluating applicants' arguments and supporting evidence in favor of registration.

They also represent the Office in cases before the Trademark Trial and Appeals Board (a rarity).

USPTO offers its lawyers an intense immersion in trademark law that provides a very solid platform for career advancement.  Office alumni, some with only 18 months of experience, have gone on to work for major and boutique trademark law firms as well as major corporations such as Procter & Gamble and NASCAR. 

Although it is one of only a handful of federal law offices that imposes a production quota on its attorneys (they must process a certain number of trademark filings annually), it is also one of the few that pays bonuses for exceeding production goals.  But perhaps the most attractive feature of this office and job is its incredibly flexible work schedule, consisting of telecommuting opportunities unmatched anywhere else in government and perhaps anywhere outside of government as well.  Most of the office’s Trademark Examining Attorneys can work from anywhere in the country, despite the office’s only physical facility being in Alexandria, Virginia, just outside of Washington, DC.  Currently, 97 percent of trademark employees are eligible to work from home; 90 percent of eligible examining attorneys work from home nearly full time and do so from 37 states across the country.

One other very important point:  USPTO has a track record of hiring recent grads as Trademark Examining Attorneys.

Other Federal Agencies

U.S. government departments and agencies also file trademark applications with USPTO.  Among the most active of these are the National Aeronautics and Space Administration, the U.S. Departments of Transportation, Defense, Energy, Commerce and Interior, and the Federal Deposit Insurance Corporation.

In addition, trademark issues arise from time-to-time in other federal organizations.  For example, the Food and Drug Administration (FDA)  is probably the most dynamic, “hidden” repository of trademark law in the government.  FDA is authorized by law to pronounce upon the acceptability of proposed pharmaceutical product trademarks.  FDA has this power even if the mark has been approved by USPTO and is registered around the world.  It is also possible that FDA reverses itself even if it conferred preliminary approval on the trademark at the time that a new drug application was submitted.

What gives FDA this authority is its power to review the name of any prescription drug as part of its review of the medication’s labeling.  FDA applies a different set of criteria from that of USPTO.

Consulting Firms

Intellectual asset management (IAM) consulting firms are another major employer of trademark attorneys.  IAM will be addressed in a future blog in my Creative Destruction series.

Boosting Your Competitive Status

Selected Credentialing Programs

• World Intellectual Property Organization - Trademarks, Industrial Designs and Geographic Indications (online)
• Franklin Pierce Law Center - Intellectual Property Diploma
• DePaul University College of Law - Certificate in Intellectual Property: Arts & Museum Law
• University of San Diego - Intellectual Property Professional Certificate
• Northeastern University – Graduate Certificate in Intellectual Property

Selected Membership (Networking) Organizations

• International Trademark Association
• American Intellectual Property Law Association
• Intellectual Property Owners Association
• Patent and Trademark Office Society
• Intellectual Property Association
• Virtual Intellectual Property Organization
• American Bar Association Intellectual Property Section

Job Opportunities

Several of the membership organizations listed above have job boards on their web sites.  In addition, the following job site is recommended:

Intellectual Property Law Server

USA Jobs http://www.usajobs.gov

Next:  IP Law – Copyrights